Tuesday, November 29, 2016

A divided TTAB panel affirmed a Section 2(e)(4) refusal of the mark ADLON for various goods and services, including "hospitality industry services," finding it to be primarily merely a surname. Although ADLON is a rare surname, the panel majority observed that it has no meaning or significance other than as a surname. Judge Quinn dissented, contending that ADLON is an extremely rare surname that consumers would perceive as a coined term having no meaning.In re Adlon Brand GmbH & Co. KG c/o FUNDUS FONDS-Verwaltungen GmbH, 120 USPQ2d 1717 (TTAB 2016) [precedential].

Guess where?

The panel majority noted that practitioners and examining attorneys often interpret and apply the Benthin factors with "a rigidity that is not warranted." Examining Attorney N. Gretchen Ulrich submitted website evidence demonstrating that ADLON is, in fact, a surname. So called "negative dictionary" evidence [NB: a "negative dictionary is not one that is printed in white type on a black background - ed.] showed that ADLON has no recognized meaning, nor is it the name of a geographic location. Applicant admitted the word has no meaning in a foreign language.

The evidence indicated that there are approximately 75 individuals in the United States having the surname ADLON. One is an actress named Pamela Adlon, who has "achieved a substantial degree of public recognition for her performances in live-action television roles" and as a voice actress, most famously in "King of the Hill," for which she won an Emmy as the character Bobby Hill. [Never heard of her - ed.]. Evidence from the IMDb mentions several other entertainers and artists with the surname ADLON. [Never heard of them either - ed.]

Guess who?

Applicant argued that the "rareness" of the surname ADLON should be dispositive in this case, since prior cases involving fewer than 100 occurrences of a surname resulted in reversal of the surname refusal. The Board, however, pointed out that a "strictly numerical approach to a surname analysis has been squarely rejected." See In re Etablissmements Darty et Fils, 225 USPQ 652, 653 (Fed. Cir. 1985). The Board again observed that "even a rare surname is unregistrable if its primary significance to purchasers is a surname." In re Eximius Coffee, LLC, 102 USPQ2d 1276, 1281 (TTAB 2016).

Applicant contended that consumers would perceive the mark as indicating applicant or its Hotel Adlon, and the source of its goods and services. According to Wikipedia, the original Hotel Adlon was one of the famous hotels in Europe, and served as the social center of Berlin throughout the Nazi period. It was largely destroyed in 1945, but has been rebuilt and now operates as the Hotel Adlon Kempinski Berlin. The hotel has been the subject of several films and documentaries.

The panel majority found this evidence to be problematical since the hotel was named ADLON because it was the surname of its founder, and was subsequently run by family members. Thus, according to the majority, the evidence shows ADLON "used in a context that suggests that the term is a surname." The panel majority found no "objective countervailing evidence" that would rebut the surname meaning of ADLON.

Examining the entire record to determine the primary significance of the term ADLON, we find that the Examining Attorney has demonstrated that ADLON is a surname that is in use in the United States, that the public has been exposed to and discussed ADLON as a surname, and that the term ADLON has no other “ordinary language meaning.” We further find that Applicant has failed to demonstrate that the term has another significance that is its primary significance as perceived by the public. We find, therefore, that ADLON is primarily merely a surname and that the refusal to register the mark must be affirmed.

Judge Quinn, in dissent, opined that the "extreme rareness of a surname may provide some insight into the perception of it by consumers." The legislative history of Section 2(e)(4) corroborates the materiality of surname rareness.

Here, the evidence revealed 75 persons with the surname ADLON. Social media evidence uncovered a mere 8 examples of ADLON as a surname. The evidence regarding media attention given to a single actress best known for her performance as the voice of an animated character falls short of proving that ADLON is primarily a merely a surname. The other individuals with the surname ADLON do not appear to enjoy any particular notoriety.

Moreover, there are no contextual clues that identify ADLON as a surname. In contrast, for example, in Darty, the term DARTY was used in a company name, Darty et Fils, that reveals its surname significance. In Eximius Coffee, the surname of those associated with applicant was ALDECOA and the product was promoted as a "premium family coffee."

Based on the record, I find that consumers would not think of the extremely rare surname ADLON primarily merely as a surname because they are highly unlikely to have encountered it as such, but rather would regard the term as being a coined term or unknown term with an unknown meaning.

With regard to the Hotel Adlon, Judge Quinn found it unlikely that consumers in the United States would know of a single hotel in Berlin, Germany [not Berlin, Connecticut - ed.], and less likely to know that Lorenzo Adler was the hotel's founder. In short, this portion of the record "plays a minimal role in the surname analysis."

In sum, Judge Quinn would reverse the refusal to register, giving the applicant the benefit of any doubt arising from the record evidence.

This is the third precedential decision in the last two months in which the Board has followed a revised approach to Section 2(e)(4), putting aside the more mechanical view of Benthin and focusing more broadly on consumer perception. The result has been a raising of the bar.

Couldn't a survey have been useful here to show that the primary significance of the term is not as a surname? A simple multiple choice question could be used to determine if there is any recognition of "Adlon" as anything at all. Put the question in an omnibus internet survey, get 1000 responses for less than $5000 and you are done.

Seems like they are saying that the more fanciful the mark the more likely it will be an obscure surname - given that there are 7.5 billion people in the world pretty much anything can be a surname. On other words, if it's common it's primarily a surname - if it's rare it's primarily a surname. Not much left.

Agree with Judge Quinn it surely isn't the primary significance to me. I'd assume it had to do with some type of advertising application. Rare name and name of actress few have ever heard of. More importantly, the decision does not give guidance on how to determine when it is and when it isn't much less advise clients considering adopting a term that is the surname of 75 people in the country. Other than back to the old days of if anyone uses it, it's a surname. My understanding is that is not the point of this section.

The rule now seems to be that if the mark was picked because it's the surname of someone who was/is associated with the applicant, then it's primarily merely a surname for all eternity, regardless of how rare it is.

As much as I love Pam Adlon (you all haven't seen her on Louie, Better Things, or Californication?), this decision is just ridiculous. What is the threshold for the number of people with a surname before that becomes its primary significance? 60? 50? I would have assumed that anything less than 1,000 in a country of almost 320 million isn't even in a gray area. Shame on me.

Nothing new here as the Board is a silly as usual. Up the flagpole to the Federal Circuit for a hand slapping! Wanna-be judges (mostly ex-examiners) creating an impossible to define standard. What could go wrong here? The term XENOSOBIL is the unfortunate name of a Cypriot immigrant living in Alabama who runs a no-tell motel and his illegal brother who is a rapper and I cannot register this mark for hospitality services?

Ridiculous decision and further compounds the steps necessary for clearance searches and now having to inform clients of that their coined term is no good because .00000025% of the population has that as a name. (I had turn my phone landscape for that calculation). This officially supplants foreign equivalency for a language no one speaks as the most BS basis for a refusal.